Provisional applications tempt stakeholders with the possibility of securing a filing date on an expedited basis and limited budget, but the value of that filing date will depend on its ability to serve as a valid priority date for the invention claimed in the non-provisional application. The non-precedential Federal Circuit decision in Purdue Pharma L.. v. Iancu shows that even a robust provisional application may not suffice if it does not include “blaze marks” that point out the claimed invention with “adequate specificity.” Continue reading this entry
In a non-precedential decision, a three-judge panel of the Federal Circuit made clear that it would not give deference to USPTO patent eligibility guidance that it finds inconsistent with Supreme Court and Federal Circuit decisions. In the case before it, the patent owner (The Cleveland Clinic Foundation) argued that its claims should be found to satisfy 35 USC § 101 by analogy to Julitis Claim 1 of the USPTO guidance, but the panel found that example to be inconsistent with its decisions.
In Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit distinguished method of treatment claims that involve personalized dosing from the claims invalidated in Mayo v. Prometheus, and found them to satisfy 35 USC 101 by analogy to Vanda. The district court had invalidated the method of treatment claims at the motion to dismiss stage of ANDA litigation.
In Natural Alternatives Internat’l v. Creative Compounds, LLC, the Federal Circuit vacated the district court decision that held the asserted claims invalid under 35 USC § 101 at the pleadings stage. I previously wrote about the court’s treatment of the product claims. Now, I consider the method of treatment claims, and the distinction the majority draws between Vanda and Mayo. This analysis may be significant now that the Supreme Court has issued a CVSG in Vanda, asking for the Solicitor General’s views on whether certiorari should be granted.
In Natural Alternatives Internat’l v. Creative Compounds, LLC, the Federal Circuit vacated the district court decision that held the asserted claims invalid under 35 USC § 101 at the pleadings stage. The claims at issue included method of treatment, product, and manufacturing claims. Here, I focus on the product claims. While the decision provides a welcome discussion of Chakrabarty and Funk Brothers, my enthusiasm is tempered by the narrow holding and Judge Reyna’s dissent.